Free Order on Motion for Summary Judgment - District Court of Arizona - Arizona

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

Century 21 Real Estate LLC,

) ) ) Plaintiff , ) ) vs. ) ) ) Century Insurance Group and Century) ) Surety Co., ) ) Defendants. )

No. CIV 03-0053-PHX-SMM MEMORANDUM OF DECISION AND ORDER

Plaintiff Century 21 Real Estate LLC ("C21") initiated this action against Defendant Century Surety Co. ("Century") in January 2003, alleging that Century's service marks ­ "Century Surety Group," "Century Insurance Group," and "Century Surety" (collectively, the "Century Marks") ­ infringe upon and dilute certain of C21's marks ­ "Century 21 & Design," and "Century 21 Real Estate" (collectively, the "C21 Marks"). (Dkt. 1.) C21 seeks cancellation of Century's registered mark "Century Insurance Group" (Count X), opposes Century's application for registration of the mark "Century Surety Group" (Count IX) and seeks money damages for claims of trademark infringement, dilution, and unfair competition (Claims I-VIII).1 (Dkt. 1 ¶¶ 5,12-14,17,22, 29,36,40,45,50,55, 58-61; Dkt. 13 ¶¶62-70.)

As this Court previously explained, C21's Complaint does not allege that Century has infringed the marks "New Century Title Company" or "21st Century Insurance Company." See Dkts. 177 at 2 & n.2; 200 at 2-14. Therefore, once again, the Court will exclude all irrelevant Document 242 Filed 02/09/2007 Page 1 of 33

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On March 16, 2006, this Court granted Century's motion for summary judgment on C21's claims of infringement, dilution, and unfair competition (the "March 16 Order"). See Dkt. 177. With respect to C21's infringement and unfair competition claims, the Court held C21 failed to establish a triable issue of fact as to whether Century's use of the Century Marks is likely to confuse reasonably prudent consumers. (Dkt. 177 at 7-45.) With respect to C21's dilution claims, the Court held that C21 failed to establish a triable issue of fact as to whether the Century Marks dilute the C21 Marks. (Id. at 45-51.) Now pending before the Court is Century's Motion for Summary Judgment on Claims IX and X (the "Registration Claims"). (Dkt. 221.) Because familiarity with the March 16 Order is presumed, the Court sets out only facts bearing on the Registration Claims. BACKGROUND2 Relevant Procedural Background On September 9, 1997, Century filed United States applications for registration of the service marks "Century Surety Group" and "Century Insurance Group" for "`Underwriting insurance in the fields of surety bonds, environmental bonds, environmental damage, workers' compensation, commercial general liability, and commercial property, in class 36'" (the "Applications"). (Dkts. 11 ¶5; 86, Ex.2 at Tabs 20-21.) In March 1999, Century's Applications were published for opposition. In June 2002, Century's Application for "Century Insurance Group" matured into a registered mark. (Dkts. 11¶6; 13¶6; 124, ¶24 at
arguments and statements of fact referring to New Century Title Company, 21st Century Insurance Company, and any other marks not identified in C21's complaint or counterclaim. The Court also strikes as irrelevant and improper all evidence submitted by C21 in opposition to the instant motion for summary judgment that concerns New Century Title Company, 21st Century Insurance Company, and any other marks not identified in C21's complaint or counterclaim. For example, C21 refers to the "Century 21" mark issued registration number 2178970 (see dkt. 229 at 5, line 1). This mark is not referred to in C21's complaint or counterclaim and is therefore disregarded. Unless otherwise indicated, the facts discussed in connection with the instant summary judgment motion are undisputed. For the reasons set forth in footnote 1, supra, the Court has excluded irrelevant arguments,"facts," and evidence that refer to New Century Title Company, 21st Century Insurance Company, and other marks not identified in C21's complaint or counterclaim.
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9.) This action was brought by C21 on January 9, 2003. (Dkt. 1.) As noted, C21 seeks cancellation of the "Century Insurance Group" mark (Count X) and opposes Century's application for registration of the mark "Century Surety Group." (Count IX). (Dkts. 1 at ¶¶ 58-61; 13 at ¶¶62-70.) II. Relevant Factual Background A. Century 21 Incorporated in 1971, C21 is a real estate brokerage franchise company that grants franchises to independently owned real estate businesses. (Dkt. 124 ¶34 at 108.) These franchisees operate under the name "Century 21" and a "doing business as" name, for example, Century 21 Smith Realty (the "Franchisees"). After it was founded, C21 grew into a nationwide organization. (Dkt. 124, ¶21 at 104.) By 1976, C21 had become and remains today the leading franchisor in the field of real estate brokerage services. (Id. ¶24 at 105.) In October 1985, TransWorld Corporation sold C21 to Metropolitan Life Insurance Co. ("MetLife"). (Id. ¶26 at 106.) In August 1995, MetLife sold C21 to Hospitality Franchise Systems, Inc., which subsequently merged and became Cendant Corporation ("Cendant"). (Id. ¶29 at 107.) C21 began using the Century 21 Marks in 1972. (Id. ¶59 at 11.) On April 12, 1977 and February 7, 1978, C21 applied to register the marks "Century 21" and "Century 21 & Design" for "real estate brokerage services" (the "Real Estate Registrations"). (Dkt. 86, Ex. 10 at Tabs 18-19.) On February 17, 1987, C21 applied to register the mark "Century 21" for "insurance brokerage services, class 36" (the "Insurance Brokerage Registration").3 (Dkts. 86, Ex. 10 at Tab 16; 124, ¶¶105-06 at 13-14.) All three applications were granted, and the marks have become statutorily "incontestable" under 15 U.S.C. § 1065. (Dkt. 123 ¶3 at 7.)

C21's counterclaim improperly cites the mark as "Century 21 Insurance." Dkt. 13 at ¶63. No evidence supports that this mark, rather than "Century 21," was ever registered. The United States Patent and Trademark Office (the "USPTO") shows that the mark "Century 21 Insurance Services, Inc." was cancelled on January 7, 2001.

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B. Century Surety Company Century is an Ohio corporation that has been in business since 1978, and was originally formed as a subsidiary to Century Agency, Inc., an insurance agency created in 1965. (Dkt. 124¶¶ 2-3 at 7,24.) Century is an underwriter of surety bonds and specialty commercial insurance geared to non-standard risks not covered by most admitted commercial insurance carriers. (Id.¶9 at 8.) "Non-standard risks" are often called "excess and surplus," because non-standard risks are not within state-defined risk parameters. (Id. ¶ 8 at 8.) Century's specialty non-standard risk commercial insurance is sold by general agents to retail agents primarily on an excess and surplus lines basis. (Id. ¶9 at 8.) Century is authorized to underwrite surety bonds and non-standard risk commercial insurance in 49 states and the District of Columbia, and is an admitted underwriter in six states. (Id. ¶¶9,1314 at 8.) Where Century is an admitted underwriter, it sells non-standard risk commercial insurance on an excess and surplus lines basis through general agents. (Id. ¶41 at 10.) Century began underwriting surety bonds in 1978, including environmental and coal reclamation bonds. (Id. ¶15 at 8.) In 1981, Century began underwriting inland marine insurance, a type of commercial property insurance. (Id. ¶10 at 8.) In 1984, Century began underwriting an expanded line of non-standard risk commercial property and liability insurance, which it continues today. (Id. ¶¶ 11-12 at 8.) Within the non-standard risk insurance market, Century underwrites commercial property insurance, commercial liability insurance, surety bonds, environmental hazard bonds, and commercial multi-peril insurance, which is a combination of commercial property insurance and commercial liability insurance. (Id. ¶ 4 at 7.) Century's legal name appears on its insurance policies. (Id. ¶31 at 9.) SUMMARY JUDGMENT STANDARD OF REVIEW A court must grant summary judgment if the pleadings and supporting documents, viewed in the light most favorable to the nonmoving party, "show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." FED. R. CIV. P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); -4Document 242 Filed 02/09/2007 Page 4 of 33

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Jesinger v. Nevada Federal Credit Union, 24 F.3d 1127, 1130 (9th Cir. 1994). Substantive law determines which facts are material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Thus, mere allegations of a factual dispute between the parties will not defeat an otherwise proper motion for summary judgment. Rather, Rule 56 requires that there be a genuine issue of material fact, which is a dispute capable of affecting the outcome of the case. Id. Therefore, summary judgment is proper if, under governing laws, there is only one reasonable conclusion as to the verdict; if reasonable finders of fact could resolve a factual issue in favor of either party, summary judgment should not be granted. Id. The movant on a summary judgment motion bears the initial burden of providing a legal basis for its motion and identifying those portions of the record which demonstrate the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. If the moving party satisfies this burden, the opposing party may not rely on denials in the pleadings but must produce specific evidence, through affidavits or admissible discovery material, to show that a genuine issue for trial exists. See Fed.R.Civ.P. 56(e). All inferences drawn from the evidence must be viewed in the light most favorable to the non-moving party. Eastman Kodak Co. v. Image Tech'l Servs., Inc., 504 U.S. 451, 456 (1992). However, inferences must be based on evidence which, if believed, would be sufficient to support a judgment for the nonmoving party. Celotex, 477 U.S. at 322. Moreover, inferences cannot be created by pointing to "some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Rather, deference to the nonmoving party has limits: (i) a plaintiff cannot rest on the allegations in her pleadings to overcome a motion for summary judgment (Brinson v. Linda Rose Joint Venture, 53 F.3d 1044, 1049 (9th Cir. 1995)); and (ii) self-serving affidavits will not establish a genuine issue of material fact if they fail to state facts based on personal knowledge or are too conclusory (Rodriguez v. Airborne Express, 265 F.3d 890, 902 (9th Cir. 2001)).

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DISCUSSION I. Law of the Case Applies Here "The doctrine of `law of the case' is rooted in the concept that courts should generally follow earlier orders in the same case and should be reluctant to change decisions already made, because encouragement of change would create intolerable instability for the parties." Ridgeway v. Montana High School Ass'n, 858 F.2d 579, 587 (9th Cir. 1988) (citation omitted). Under law of the case doctrine, a court is "generally precluded from reconsidering an issue previously decided by the same court, or a higher court in the identical case." Milgard Tempering, Inc. v. Selas Corp. of America, 902 F.2d 703, 715 (9th Cir. 1990). For the law of the case doctrine to apply, "the issue in question must have been `decided explicitly or by necessary implication in [the] previous disposition.'" Id. (citations omitted); see also Lower Elwha Band of S'Klallams v. Lummi Indian Tribe, 235 F.3d 443, 452 (9th Cir. 2000). Courts adhere to the doctrine of law of the case and give preclusive effect to prior decisions on legal issues in the same case unless (1) substantially different evidence is subsequently presented, (2) there has been a change in controlling law applicable to the previously decided legal issues, or (3) the prior decision was clearly erroneous and would work a manifest injustice unless it is subsequently revisited. Merritt v. Mackey, 932 F.2d 1317, 1320 (9th Cir. 1991). The parties disagree as to whether the legal findings in the Court's March 16 Order are to be given preclusive effect under the doctrine of law of the case. See Dkts. 221 at 2-3; 229 at 3. Century argues that findings in the March 16 Order are directly applicable here except with respect to issues concerning (i) the similarity of services listed in Century's and C21's application and registrations; and (ii) the similarity of trade channels utilized for the services listed in such application and registrations. (Dkts. 219 at 4-6; 221 at 3-4.) Without articulating why findings in the March 16 Order do not address the issues presented here, C21 contends law of the case applies "only when it concerns facts necessarily decided previously in this case and there is no change in controlling law." (Dkt. 229 at 3.) It is clear that many -6Document 242 Filed 02/09/2007 Page 6 of 33

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of the legal findings set forth in the March 16 Order are relevant to determining whether summary judgment should be granted to Century on C21's Registration Claims, the bases of which are likelihood of confusion and dilution. In determining whether law of the case applies here, it is important to bear in mind the standards which govern both an infringement claim and a registration claim based on likelihood of confusion. As is the case with most registration claims based on likelihood of confusion (see 15 U.S.C. § 1052(d)), the ultimate issue is whether the contemporaneous registration of both Century's Marks and C21's Marks will likely cause confusion. See Dkts. 1 at ¶¶58-61; 13 at ¶¶62-70 (C21 alleges that registration of Century Marks will likely cause confusion). Because C21's Registration Claims are based on likelihood of confusion, the infringement claim resolved in the March 16 Order addresses the same issue presented here: "whether the similarity of the marks is likely to confuse customers about the source of the" services. E & J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992). Thus, except with respect to the services and trade channels stated in the relevant application and registrations, which this Court has not yet addressed, legal findings in the March 16 Order pertaining to likelihood of confusion apply here under law of the case. Similarly, the standards that govern both dilution claims and registration claims based on dilution are identical. See 15 U.S.C. §§ 1063(a), 1064, 1125(c). As C21 points out, Congress recently revised the statutory requirements of dilution. See Trademark Dilution Revision Act of 2006, Pub.L. 109-312, 120 Stat. 1730 (Oct. 6, 2006). However, the Court's March 16 Order, which held that C21 failed to establish a triable issue of fact regarding dilution, was based on two alternative theories not impacted by the change in law. See dkt. 239. Thus, legal findings in the March 16 Order pertaining to dilution apply here under law of the case. II. Applicable Trademark Law Generally speaking, a service mark is a distinctive mark used to identify and distinguish services, such as insurance and real estate, while a trademark is typically used to -7Document 242 Filed 02/09/2007 Page 7 of 33

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identify and distinguish tangible goods. See American Int'l Group, Inc. v. American Int'l Bank, 926 F.2d 829, 830 n.1 (9th Cir. 1991). Service marks are registrable in the same manner and entitled to the same protection under federal law as trademarks. See 15 U.S.C. § 1053. Moreover, Congress has expressly provided courts with authority over the USPTO on registration issues involving service marks: In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby. 15 U.S.C. § 1119. The net effect of § 1119 is to provide this Court concurrent power with the USPTO to rule on the instant Registration Claims. C21 alleges that Century's federally registered mark "Century Insurance Group" should be cancelled and its federal application for registration of the mark "Century Surety Group" should be denied because both Marks create a likelihood of confusion with, 15 U.S.C. § 1052(d), and are likely to dilute, C21's Marks, id. §§ 1063-1064. Dkts. 1 at ¶¶5861; 13 at ¶¶62-70. III. Likelihood of Confusion A. C21's Common Law Rights and Real Estate Registrations Cancellation of a registered service mark and denial of an application for registration of a service mark is appropriate if there is a likelihood of confusion between the accused's service mark and one or more of plaintiff's service marks. 15 U.S.C. § 1052(d). In order to determine whether contemporaneous use of the parties' marks is likely to confuse a reasonably prudent consumer as to the origin of services bearing the accused mark, courts -8Document 242 Filed 02/09/2007 Page 8 of 33

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apply the likelihood of confusion test. M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073, 1080 (9th Cir. 2005). In the Ninth Circuit, the likelihood of confusion test requires courts to consider eight factors, referred to as the Sleekcraft factors: (1) strength of the asserted mark; (2) similarity of the marks; (3) similarity or relatedness of the parties' services; (4) marketing channels used for services; (5) degree of care likely to be exercised by purchasers of services; (6) evidence of actual confusion; (7) defendant's intent in selecting the accused marks; and (8) likelihood of expansion of service lines. Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 631 (9th Cir. 2005), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) ("Sleekcraft"), abrogated in part on other grounds by Mattel, Inc. v. Walking Mountain Prod., 353 F.3d 792, 810 n.19 (2003). The likelihood of confusion test is fluid, and every factor need not be shown, provided that strong showings are made with respect to some of them. See Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129-30, 1132 (9th Cir. 1998) (allowing case to proceed to trial where plaintiff overwhelmingly satisfied three Sleekcraft factors). Whether a party "wins" a majority of the Sleekcraft factors is not the point. Nor should "[t]he factors ... be rigidly weighed; we do not count beans." Id. at 1129. Although some factors ­ such as the similarity of the marks and whether the services directly compete ­ will always be important, it is often possible to reach a decision on the likelihood of confusion after considering only a subset of the factors. Id. at 1130-32. As the Court applies the Sleekcraft test, it will "consider what each factor, and--more importantly--what the analysis as a whole, reveals about the ultimate question . . . : the likelihood of consumer confusion as to the origin of . . . service[s] bearing the allegedly infringing mark." Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002). Finally,

"[l]ikelihood of confusion requires that confusion be probable, not simply a possibility." Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987).

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Likelihood of confusion may be decided as a matter of law. See Abdul-Jabbar v. General Motors Corp., 85 F.3d 407, 413 (9th Cir. 1996) (recognizing that summary judgment is appropriate where a jury could not reasonably conclude that most Sleekcraft factors weigh in non-moving party's favor). However, the Court is mindful of the Ninth Circuit's directive that district courts exercise caution in granting summary judgment regarding the likelihood of confusion, as careful assessment of the factors that go into this determination usually requires a full record. See Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1265 (9th Cir. 2001). As previously noted, the record provided here is overflowing. See Dkts. 83-166. Given the different analysis that applies to the third and fourth Sleekcraft factors (see infra at 12-16) ­ similarity of services and trade channels utilized ­ for registration claims, the Court will first analyze the likelihood of confusion between Century's registration and application for "Century Insurance Group" and "Century Surety Group" and C21's common law rights and Real Estate Registrations. The Court will then analyze the likelihood of confusion between Century's registration and application for "Century Insurance Group" and "Century Surety Group" and C21's Insurance Brokerage Registration. See infra at 18-21. 1. Strength of the Century 21 Marks

Although the C21Marks are arbitrary and commercially strong for real estate brokerage services, the Court previously determined that C21 failed to demonstrate its Marks are similarly well-known for insurance services, particularly given the lack of C21's actual use and advertising of such marks in the insurance industry. See Dkt. 177 at 12:3-15:10. Moreover, because the record establishes that the real estate and insurance fields are crowded with marks using the term "Century," the Court determined there is no dispute that the strength of C21's Marks belongs only to the unitary mark "Century 21," not the word "Century" alone. Id. at 13:3-24; 15:11-18:27. The strength of unitary marks cuts both ways in the likelihood of confusion analysis. The better known C21's Marks are, the more readily consumers become aware of even small differences. Given the strength of C21's unitary mark ­ "Century 21" ­ the Court determined that consumers would immediately notice that - 10 Document 242 Filed 02/09/2007 Page 10 of 33

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Century's Marks do not contain the numeral "21." See dkt. 177 13:3-24. Evidence showing extremely prevalent use of the term "Century" in both the insurance and real estate industries also makes C21 Marks less distinctive. Based on undisputed evidence showing substantial use of the term "Century" in the real estate and insurance industries, the Court found no reasonable jury could conclude that the public would expect all companies with "Century" in their names to be related to C21, or that all services using the name "Century" emanate from a single source. Rather, Century's Marks are just two of many "Century" marks in a crowded field.4 See id. at 15:11-18:27. Given the Court's findings regarding the inherent strength of C21's Marks for real estate services, the weakness of the C21 Marks for insurance services, and weakness resulting from overwhelming third-party use of the term "Century" in the real estate and insurance industries, the strength factor favors C21 but only slightly (id. at 19:1-19). 2. Similarity of the Marks

In the March 16 Order, the Court found that no jury could reasonably conclude the mark "Century 21" is similar to "Century," in terms of sound, appearance, and connotation. Id. at 19:20-22:14.5 Of primary importance to this determination is the undeniable fact that the mark "Century 21" must be considered a unitary term, with equal

The only reasonable inference from evidence showing substantial use of the term "Century" is that consumers have become conditioned to recognize that many entities in the fields of real estate and insurance use the term "Century." The common presence in marks of elements extensively used by others cause purchasers not to rely upon such elements as source indicators but to look to other elements as a means of distinguishing the source of the services. As a result, the prevalence of the term "Century" in the industries at issue here is key here to determining the distinctiveness of C21's Marks and plays a significant role in the likelihood of confusion analysis. The Court previously compared "Century" and "Century 21," as those are the most similar of the parties' marks (dkt. 124 ¶141 at 16). See Dkt. 177 at 19 n.14. The Court rejects C21's contention now that the Court has not previously compared C21's Marks to the marks specified in the registrations at issue here ­ "Century Surety Group" and "Century Insurance Group" ­ because "Century" is the dominant element of both marks and the descriptive phrases "Surety Group" and "Insurance Group" have been disclaimed. See Dkt. 97, exs. 69-70.
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weight provided to both elements of the mark (id. at 21:6-22:2). Because C21's Marks place equal significance on the numeral "21" and the word "Century," there is no genuine issue of material fact that the Marks at issue here differ visually and aurally, and convey entirely different commercial impressions and meanings (id. at 19:20:-21:5).6 The Court's finding that confusion is not likely to result from the contemporaneous use of C21's and Century's Marks is buttressed by undisputed evidence of the commonality of the term "Century" in the real estate and insurance industries (id. at 15:11-18:27, 22:3-7). Given the prevalence of the term "Century" in the real estate and insurance industries and the fact that C21's Marks are unitary, the mere commonality of "Century" in both parties' marks is an insufficient basis on which to find similarity and likelihood of confusion. (Id.) Thus, the similarity factor favors Century. See supra at 10-11 & n.4. 3. Similarity of Services

Next, the Court looks at the similarity of services described in the application and registrations. For registration claims, it is well-settled that the issue of likelihood of confusion must be "based on an analysis of the mark as applied to the . . . services recited in applicant's application vis-a-vis the . . . services recited in an opposer's registration, rather than what the evidence shows the . . . services to be." Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1491 (Fed. Cir. 1987). Because the Court previously compared the services actually provided by Century and C21 (dkt. 177 at 22:15-33:10), the analysis of this factor will not rely on findings in the March 16 Order. See supra at 7:14-15, 10:9-10. In the present case, the services identified in C21's Real Estate Registrations ­ real estate brokerage services (dkt. 86, ex. 10 at 18-19) ­ include all types of real estate

Century's Marks, with their dominant emphasis on the word "Century," suggest an entity that has been established for a long time, perhaps one hundred years, and reflects its past history. C21's Marks, on the other hand, suggest innovation and the future. See Century 21 Real Estate Corp. v. Century Life of America, 1992 WL 809137, *5 (T.T.A.B. 1992). In this respect, C21's Marks convey ideas of creativity and innovation. Century's Marks, on the other hand, imply a wellestablished and long-standing foundation.

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brokerage services, not just the services actually provided. Bank of Commerce, 811 F.2d at 1491-92. The services stated in Century's application and registration ­ underwriting insurance in the fields of surety bonds, environmental bonds, environmental damages, workers' compensation, commercial general liability, and commercial property (dkt. 97, exs. 69-70) ­ include all types of underwriting services. Id. With respect to C21's common law rights, the Court previously determined there is no genuine dispute of fact that (i) C21 has not directly competed against Century in the insurance industry (id. at 23:19-31:21) and (ii) C21 Franchisees do not sell or underwrite insurance under C21's Marks, so use of the C21 Marks for insurance services does not inure to C21's benefit (id. at 28:1-31:18). Thus, C21's common law rights are limited to real estate brokerage services, not insurance. Comparing the real estate brokerage services provided by C21 with the insurance underwriting services provided by Century, the Court concludes no reasonable jury could conclude that C21 and Century are direct competitors or that there is any overlap between real estate brokerage services and insurance underwriting services (dkt. 177 at 31:22-33:10). Rather, the two services are substantially distinct, as they perform entirely different functions and appeal to different groups of consumers attempting to have different types of needs serviced. Those distinctions, moreover, outweigh any superficial similarity which could arise, for example, because some real estate brokers also sell insurance and nearly all real estate owners buy insurance. See Glow Industries, Inc. v. Lopez, 273 F.Supp.2d 1095, 1113 (C.D.Cal.2003) (generally similar products are not substantially similar if they have key differences designed to appeal to distinct customer groups). Accordingly, the Court finds no reasonable jury could conclude Century's insurance underwriting services are so closely related to C21's real estate services that confusion would likely result from contemporaneous use of their dissimilar marks. This factor favors Century. The Court also rejects any argument that real estate and insurance are "related," because some real estate agents also sell insurance and nearly all real estate owners buy insurance. C21's Real Estate Registrations are strictly limited to "real estate brokerage - 13 Document 242 Filed 02/09/2007 Page 13 of 33

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services," and do not include any other services utilized by real estate owners. Moreover, based on the Court's finding that C21's Marks and Century's Marks are dissimilar as a matter of law (supra at 11-12), no jury could reasonably conclude that confusion would likely result from contemporaneous use of C21's and Century's Marks even assuming, arguendo, real estate brokerage services and underwriting services are related.7 4. Services Marketed Through Similar Channels/To Similar Customers

As previously stated, the issue of likelihood of confusion must be determined in light of the services set forth in the opposed application and pleaded registration and, "in the absence of specific limitations in the application and registration, on consideration of the normal and usual channels of trade and methods of distribution" for such services. CBS Inc. v. Morrow, 708 F.2d 1579, 1581 (Fed. Cir. 1983). Here, C21's Real Estate Registrations and Century's application and registration are unrestricted. See Dkts. 86, Ex. 10 at Tabs 16, 1819; 97, Exs. 69-70. Thus, both parties' services are marketed or will be marketed in all the normal channels of trade for the identified services and to all the usual classes of purchasers of such services. See CBS Inc., 708 F.2d at 1581. Because the Court previously compared the parties' actual trade channels and customers (see dkt. 177 at 33:11-36:5), the Court will not rely on findings in the March 16 Order. See supra at 12:13-20. In the present case, there can be no genuine dispute that the parties offer different services ­ real estate and insurance ­ to some of the same consumers through some of the same channels of trade. However, even if some of the ultimate end-users of insurance and real estate are the same, it cannot reasonably be disputed that the remaining targets of C21's

C21 does not discuss in detail why real estate and insurance services are closely related, nor does it explain how the ordinary consumer would likely be confused even assuming such relation. See Kangol Ltd. v. KangaROOS U.S.A., 974 F.2d 161, 163 (Fed. Cir. 1992) ("likelihood of confusion must be determined from the perspective of the ordinary consumer"). Rather, C21 argues only that, for registration claims, likelihood of confusion must be determined on the basis of the services identified in the application and registrations, rather than the services actually provided. The Court has properly applied the law in this manner. See supra at 12-14.

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and Century's sales efforts are different, as evidenced by the different types of advertising media used to sell their services. Customarily, real estate brokerages sell their services to people and businesses interested in buying and selling residential and commercial real property. To achieve that goal, real estate brokerages rely heavily on direct print marketing to real estate brokers and agents, appraisers, banks, savings and loans, and, of course, people and businesses interested in buying or selling real property. In addition, advertising and marketing of real estate is accomplished by Internet, face-to-face communications and advertisements on television, radio, newspapers, and magazines. Real estate agents do not advertise in insurance industry publications or publications directed to general or retail insurance agents, or at trade shows attended by insurers. Underwriting insurers, by contrast, primarily seek to sell their services to retail insurance brokers who, in turn, sell insurance to persons and businesses seeking to insure various risks. Because there are no restrictions in Century's identification of services, however, the law requires the Court to assume that Century markets it services through all usual channels ­ that is, through direct print marketing and face-to-face communication with potential policyholders and retail agents. See CBS Inc., 708 F.2d at 1581. Insurers generally do not advertise on television or radio and do not advertise in newspapers. Rather, due to the unusual nature of the service they offer, they primarily advertise and promote services in specialty insurance industry publications and at trade shows. Although consumers of both parties' services overlap to a certain extent, and thus it is possible that C21's real estate customers and Century's insurance customers may be subject to direct solicitation from both C21 and Century, it is not reasonable to infer that contemporaneous use of both parties' Marks would likely lead to confusion because their services are offered in different marketing contexts to consumers attempting to have different needs serviced. See Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1110 (6th Cir. 1991) ("if the services of one party are sold through different marketing media in a different marketing context than those of another seller, the likelihood that either - 15 Document 242 Filed 02/09/2007 Page 15 of 33

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group of buyers will be confused by similar service marks is much lower than if both parties sell their services through the same channels of trade"). Moreover, given the differences between insurance and real estate sales, the parties' marketing efforts are concentrated in a small percentage of the same advertising media and a much larger percentage of different advertising media. Because some of the same customers are likely targeted by both parties through some of the same marketing channels, this factor is neutral. 5. Degree of Care Likely To Be Exercised by Purchasers

In the March 16 Order, the Court determined that, because purchasers of nonstandard risk commercial insurance are professionals who select insurance after careful deliberation and comparison of multiple bids and the financial stability of underwriters, the purchasing process presents little opportunity for confusion. See Dkt. 177 at 36:6-37:18. Similarly, there is no reasonable dispute that purchasers of real estate exercise considerable care and sophistication. Because both non-standard risk commercial insurance and real estate purchases are well-planned, rather than impulse, purchases, there can be no genuine dispute that purchasers proceed cautiously and deliberately in making their choices. As a result, it cannot reasonably be disputed that purchasers will be aware of the differences in the Marks rendering the services at issue here: "Century" and "Century 21." Moreover, sophisticated and careful purchasers are more likely to ask questions if there is any doubt about a connection between two marks. As a result, there is no reasonable likelihood that the sophisticated consumers of C21's and Century's services would not be aware that C21 does not offer underwriting services and Century does not offer real estate services. See Dkt. 177 at 36:6-37:18. Thus, this factor favors Century. 6. Evidence of Actual Confusion

In order to analyze the "actual confusion" factor, the March 16 Order found no disagreement between the parties that Century has provided its specialty insurance on a nationwide basis since at least 1991 (see Dkt. 177 at 37:26-38:1 & n.26). Notwithstanding at least 15 years of co-existence, both parties also agreed that there are no known instances of actual confusion between the Marks at issue here, even though more than 4,500 C21
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Franchisees (who employ a total of 120,000 agents) are required to report infringing uses of the C21 Marks. See id. at 38:4-40:12 & n.27. In addition to the lack of confusion by consumers and Franchisees, Century produced deposition testimony confirming that none of the 19 third-party insurers who use the term "Century" were aware of any marketplace conflict with C21 over the word "Century," and that at least three of those insurers receive referrals from C21's franchisees. Id. Given the fifteen-year period of time during which Century has used the Century Marks without any instance of actual confusion by consumers, C21 Franchisees, and other "Century" insurance companies strongly suggests there is no likelihood of confusion. See id. at 40:9-12. Thus, this factor favors Century. 7. Century's Intent in Selecting the Century Marks

In the March 16 Order, the Court found there is no evidence that Century adopted the Century Marks in order to trade on C21's goodwill or to intentionally cause confusion. See Dkt. 177 at 40:13-42:7. Century's good faith adoption of its Marks was shown by undisputed evidence of the history of the Marks and a trademark clearance search by Century to determine the availability of registering the Marks before applying for registration. See id. at 40:24-41:24. Because C21's proof falls far short of proving bad faith, and undisputed evidence shows Century is a good faith user searching for an available mark in an alreadycrowded field, this factor weighs in favor of Century. 8. Likelihood of Expansion

In the March 16 Order, the Court held there is no genuine dispute of fact that the parties do not intend to expand into each other's service lines. See Dkt. 177 at 42:8-44:6. The evidence demonstrated that Century has no plans to offer personal lines insurance, or to alter its wholesale distribution channel, nor does it plan to market or advertise its services to real estate brokers, the general public, or potential policyholders. See id. at 42:14-18. In addition, there is no dispute that C21 has no plans to offer excess and surplus lines insurance, underwrite insurance, or market insurance through general, wholesale agents. Nor does C21 have plans to advertise in insurance publications that Century advertises in, or to attend insurance trade shows in which Century participates. C21's conclusory assertion that it plans
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to enter Century's specialty insurance field was rejected as vague, unsupported argument, and mere speculation. See id. at 42:19-44:6. Aside from speculation, there is no evidence that the parties intend to expand into each other's service lines. Thus, this factor favors Century. 9. Conclusion: Common Law Rights and Real Estate Registrations

The Court has thoroughly examined the relevant Sleekcraft factors with respect to C21's Real Estate Registrations and common law rights. The significant differences between C21's and Century's Marks, the prevalence of "Century" marks in the real estate and insurance industries, the weakness of C21's Marks in the insurance field, the highly sophisticated decision-making process in both industries, and the inherent differences in the nature of services the parties provide warrant a finding of no likelihood of confusion. This finding is buttressed by the absence of any proof showing (i) actual confusion between the Marks at issue here, (ii) bad faith by Century in adopting its marks, and (iii) expansion plans of either party. Therefore, the Court finds no reasonable jury could conclude that the contemporaneous use of Century's Marks and C21's Marks in the insurance and real estate brokerage industries will likely confuse consumers. B. C21's Insurance Brokerage Registration As shown above, when analyzing registration claims, a different analysis applies to the third and fourth Sleekcraft factors ­ similarity of services and trade channels. Supra at 12-16. Because the same findings and conclusions of the other Sleekcraft factors apply equally to the Court's analysis of the likelihood of confusion between Century's application and registration and C21's Insurance Brokerage Registration, they will not be detailed below. 1. Strength of the C21 Marks

Given the Court's findings regarding the inherent strength of C21's Marks in the real estate industry, the weakness of the Marks in the insurance industry, and weakness resulting from third-party use of the term "Century" in real estate and insurance industries, the strength factor favors C21 but only slightly (dkt. 177 at 19:1-9). Supra at 10-11.

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2.

Similarity of the Marks

In considering the similarity of the Marks at issue here, the Court notes that when marks are used in connection with identical services, "the degree of similarity [between them] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877 (Fed. Cir. 1992). Although not identical, the Court concludes that the services identified in C21's Insurance Brokerage Registration are substantially similar to the services identified in Century's registration and application. See infra at 19. Even though a lower threshold of similarity applies, the Court finds the parties' Marks are substantially dissimilar. See supra at 11-12. Thus, this factors favors Century. 3. Similarity of Services

In analyzing the similarity of the parties' services, the Court may not rely on findings in the March 16 Order. Supra at 12. Instead, the law requires a presumption that the services identified in C21's Insurance Brokerage Registration ­ "Insurance Brokerage Services" ­ include all types of insurance services, even though the Court previously concluded that C21 does not actually provide insurance under the C21 Marks (dkt. 177 at 23:19-31:21). Bank of Commerce, 811 F.2d at 1491. Similarly, the services identified in Century's application and registration ­ "underwriting insurance in the fields of surety bonds, environmental bonds, environmental damages, workers' compensation, commercial general liability, and commercial property" (dkt. 97, exs. 69-70) ­ are presumed to include all types of insurance underwriting services. Bank of Commerce, 811 F.2d at 1490. Comparing the insurance brokerage services set forth in C21's Insurance Registration with the insurance underwriting services identified in Century's application and registration, the Court finds no jury could reasonably conclude that parties' services are not substantially similar, because both identifications encompass the sale of insurance. Thus, this factor favors C21.

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4.

Channels Through Which Services are Marketed

The identifications of services in C21's Insurance Brokerage Registration and Century's application and registration do not include any limitations with respect to trade channels. Moreover, because the respective services are substantially similar, the Court assumes that both parties' services move through the same and similar channels, specifically all trade channels normal for services in the insurance industry, and are sold to substantially the same insurance consumers. See Octocom Systems, Inc. v. Houston Computer Services Inc., 918 F.2d 937 (Fed. Cir. 1990). This factor favors C21. 5. Degree of Care Likely to be Exercised by Purchasers

This factor favors Century because, when purchasing insurance services, even ordinary consumers are likely to exercise great care and know with whom they are dealing. See supra at 16. 6. Evidence of Actual Confusion

This factor favors Century because, in the fifteen-year period during which both C21 and Century have used their respective Marks, there have been no instances of actual confusion by consumers, C21 Franchisees, and companies in the insurance industry. See supra at 16-17. 7. Century's Intent in Selecting the Century Marks

This factor favors Century because C21 has presented no evidence that Century adopted its Marks in order to trade on C21's goodwill or to intentionally confuse insurance consumers. See supra at 17. 8. Likelihood of Expansion

This factor favors Century because, aside from speculation, C21 has not presented any evidence that it intends to expand into the business of underwriting or that Century intends to expand into the insurance brokerage business. See supra at 17-18. 9. Conclusion

Having examined the Sleekcraft factors with respect to C21's Insurance Brokerage Registration and Century's registration and application, the Court concludes that
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Century has met its burden of pointing to specific portions of the pleadings, depositions, and other evidence to show the absence of a genuine dispute of material fact regarding the likelihood of confusion if C21's Marks and Century's Marks are contemporaneously registered and used in the insurance industry. C21, by contrast, has failed to meet its burden of demonstrating a genuine dispute of material fact as to whether contemporaneous registration and use of the parties' Marks is likely to cause consumer confusion. Although it is well-settled that a likelihood of confusion results if the same services are marketed under the same or similar marks, no reasonable jury could conclude that contemporaneous registration and use of the parties' Marks would likely confuse purchasers in determining whether insurance services emanate from the same source or there is an association between the parties. The Marks at issue here are extremely dissimilar in appearance, sound, connotation, and commercial impression, mainly because the mark "Century 21" is a unitary symbol doing business in an industry dominated by businesses using the term "Century." See supra at 10-12 & n.4. Because the Marks are dissimilar, it is highly unlikely that confusion would result from contemporaneous registration and use of the Century Marks and C21 Marks in the insurance industry. See Kellogg Co. v. Pack'em Enterprises, Inc., 951 F.2d 330, 332-33 (Fed. Cir. 1991) (no likelihood of confusion between "FROOT LOOPS" trademark for breakfast cereal and other products and "FROOTEE ICE," based on single factor of dissimilarity as to appearance, sound, and commercial impression). Moreover, C21's Marks are particularly weak in the insurance industry, which is crowded by many "Century" terms, and thus commands only a narrow scope of protection. Supra at 10-12. Finally, the purchase of insurance presents little opportunity for confusion. Supra at 16. Thus, the Court finds no reasonable jury could conclude that the contemporaneous use of Century's Marks and C21's Marks in the insurance industry will likely confuse consumers.

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IV.

Likelihood of Dilution Having rejected C21's Registration Claims based on likelihood of confusion, the

Court considers C21's claim that contemporaneous use of the Century Marks and the C21 Marks will likely dilute the distinctive quality of C21's Marks by blurring.8 On October 6, 2006, the Trademark Dilution Revision Act of 2006 (the "TDRA"), was signed into law and became effective immediately. See Pub.L. 109-312, 120 Stat. 1730 (Oct. 6, 2006). The TDRA defines dilution as follows: Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. 15 U.S.C. § 1125(c)(1), emphasis added. Dilution by blurring occurs "when another's use of a mark creates `the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product.'" Playboy Enters., Inc. v. Welles, 279 F.3d 796, 805 (9th Cir. 2002) (citation omitted). In other words, blurring by dilution protects any mark that is both distinctive and famous against the use and registration of marks that would lessen the capacity of the famous mark to identify and distinguish the famous mark owner's services. Both opposition and cancellation claims may be based on claims of dilution by blurring. See 15 U.S.C. §§ 1063(a) and 1064. The TDRA revised the Federal Trademark Dilution Act in three significant ways: (i) a likelihood of dilution, rather than actual dilution, is now required to establish dilution; (ii)

8

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courts may apply four factors to determine whether a mark is famous and protection is denied to marks that are famous in only "niche" markets; and (iii) courts may apply six factors to determine whether a mark is likely to cause dilution by blurring. See House Report on Trademark Dilution Act of 2005 at 8, 25 ("House Report"). In the March 16 Order, the Court dismissed C21's federal dilution claim for two alternative reasons. First, as a matter of law, no reasonable jury could conclude that "Century" is identical, or nearly identical, to the mark "Century 21." See dkt. 177 at 46-47. Although the TDRA no longer requires actual dilution, the new law does not eliminate the requirement that the mark used by the alleged diluter be "identical," "nearly identical," or "substantially similar," to the protected mark. See House Report at 8, 25; 15 U.S.C. § 1125(c)(2)(B) ("`dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark . . . .") (emphasis added); Playboy Enters., Inc., 279 at 806 n.41 (elucidating the "identical or nearly identical" standard for dilution); Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 906 (9th Cir. 2002) ("[t]he marks must be of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior"). As discussed above, the C21 Marks and the Century Marks are neither identical nor substantially similar. Thus, the Court will deny C21's Registration Claims based on dilution because no reasonable jury could conclude that the C21 Marks are identical, nearly identical or substantially similar to the Century Marks. Similarity It is well-settled that the "similarity of marks" test for blurring is more stringent than the similarity of marks test for likelihood of confusion purposes. Thane Int'l, 305 F.3d at 906 (similarity of marks test in dilution context is more stringent than test for infringement). Substantial similarity is required in the dilution context because the mark used by the alleged diluter and the protected mark "must be `similar enough that a significant segment of the target group of customers sees the two marks as essentially the same.'" Playboy Enters., 279 F.3d at 806 n.41 (quoting Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 832 (8th

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Cir.1999)). It is not sufficient for dilution if the marks used are just similar; they must be "essentially the same mark." Thane Int'l, 305 F.3d at 905. The Court previously determined that the differences between the C21 Marks and the Century Marks are so significant that consumers would not be confused by their contemporaneous registration and use. Supra at 18-21. Given that finding, and now focusing on the Marks in the context of dilution, the Court concludes that no jury could reasonably find the Marks are substantially similar. See Thane Int'l, 305 F.3d at 906 (similarity of marks test in dilution context is more stringent than test for infringement). Thus, C21's Registration Claims are denied on this basis alone. Mental Association An alternative basis for the March 16 Order's dismissing C21's dilution claims is the Court's finding that no reasonable jury could conclude that the C21 Marks are actually diluted by the Century Marks (see dkt. 177 at 47-51). Although actual dilution is no longer the proper standard for evaluating a dilution claim, a critical component of "actual dilution" is mental association between the marks at issue. The March 16 Order specifically found that C21 failed to show a genuine dispute of material fact regarding the mental association component of actual dilution. See Dkt. 177 at 48. Like the substantial similarity element, the TDRA does not eliminate the requirement that consumers mentally associate the mark used by the alleged diluter with the protected mark. See 15 U.S.C. §

1125(c)(2)(B)("`dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark . . . .") (emphasis added);Mead Data Central v. Toyota Motor Sales, U.S.A., 875 F.2d 1026, 1030-31 (2d Cir. 1989) (applying New York dilution law, which incorporates "likely to cause dilution" standard; no substantial similarity between LEXIS and LEXUS because dilution requires "mental association"); Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359, 1363 (9th Cir. 1993) ("Whittling away will not occur unless there is at least some subliminal connection in a buyer's mind between the two parties' uses of their marks.").

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In the present case, C21 is seeking to enjoin Century from using the marks beginning with the word Century even though C21 uses the very different mark "Century 21." See Dkt. 124 ¶141 at 16. C21 has never registered the term "Century" alone, does not use or advertise the word "Century" alone, and prohibits its Franchisees from abbreviating or shortening the name "Century C21" to "Century." Id. ¶¶109-11 at 14,58-59. Moreover, C21 has not produced any survey information to demonstrate that customers recognize or associate the word "Century" in isolation with the term "Century 21." Id. ¶¶108,112 at 14. Given that C21 seeks to prevent Century from using the word "Century," and that the word "Century"is widely used in both the insurance and real estate industries (see supra at 10-12), there is no basis from which a jury could find that consumers mentally associate the word "Century," standing alone, with the mark "Century 21." Indeed, during the parties' 15 years of (undisputed) co-existence, none of the 4,500 Franchisees have mentioned Century to C21 (see Dkt. 124, ¶¶177-179 at 21) and C21 itself only became aware of Century when its registration applications were published for opposition by the USPTO (id. ¶120 at 14). See Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1539 (9th Cir. 1989) ("the parties' concurrent use of `Accuride' as a trademark for twenty-five years effectively precluded a finding that the value of "Accuride" trade name could be diluted"). C21 does not dispute that it knows of no instance in which anyone has ever mentally associated C21 and Century, and no evidence of mental association has been produced by C21. See Dkt. 124, ¶¶186-87 at 22. Because no reasonable jury could conclude that relevant consumers mentally associate the Century Marks with the C21 Marks, C21's Registration Claims based on dilution must be dismissed as a matter of law. Dilution Analysis Under the TDRA Factors C21 argues that the TDRA no longer requires the marks at issue be essentially the same. See Dkt. 235 at 4. Instead, C21 contends the TDRA requires an analysis of six factors, one of which includes similarity. Id. The Court expresses no view on whether the TDRA requires the six factor analysis to be applied in resolving registration claims. However, assuming such analysis is required, the Court finds no reasonable jury could
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conclude that Century's Marks are likely to dilute C21's Marks by blurring. Thus, the Court will dismiss C21's Registration Claims based on the theory of dilution. The TDRA specifically provides that In determining whether a mark . . . is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark. 15 U.S.C. § 1125(c)(2)(B)(i)-(vi). In the present case, applying the factors set forth in the TDRA and assuming, arguendo, that C21's Marks are "famous," the Court finds no reasonable jury could conclude that Century's Marks are likely to cause dilution by blurring of C21's Marks. 1. The Century Marks are Not Similar to the C21 Marks

As previously discussed, no reasonable jury could conclude that the Century Marks are similar to the C21 Marks. Supra at 11-12. Thus, this factor favors Century. 2. The C21 Marks are Inherently Distinctive

Although the mark "Century," standing alone, is not distinctive in either the real estate or insurance industry, there is no genuine dispute that the C21 Marks ­ the term

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"Century" followed by the numeral "21" ­ are inherently distinctive and well-recognized in the real estate industry (see dkt. 124¶¶72-74 at 123-24). This factor favors C21. 3. C21 Engages in Substantially Exclusive Use of the C21 Marks

Although the evidence overwhelmingly demonstrates that C21 does not engage in exclusive use of the term "Century" (see supra at 10-12), there is no genuine dispute that C21 engages in substantially exclusive use of the mark "Century 21." This factor favors C21 slightly because it is undisputed that Century's Marks do not use the numeral "21." 4. Degree of Recognition of the C21 Marks

C21 has not produced any survey information to demonstrate that customers recognize or associate the word "Century" in isolation with the term "Century 21." (Id. ¶¶108,112 at 14.) However, there is no genuine dispute that the C21 Marks ­ use of the term "Century" followed by the numeral "21" ­ are well-recognized in the real estate industry. Thus, this factor favors C21. Again, this factor is not especially significant because it is undisputed that Century's Marks do not use the numeral "21." 5. Century did Not Intend to Create an Association with the C21 Marks

C21 has presented no evidence that the Century Marks were adopted in order to trade on C21's goodwill or to create an association with the C21 Marks. To the contrary, Century's evidence shows without dispute that the origination of Century's Marks had nothing to do with C21. Century's former parent company was named Century Agency, Inc. and the word "Surety" was consistent with the company's underwriting of surety bonds. See Dkt. 124¶¶2-3 at 7,24-25. As a result, the mark "Century Surety" was formed by combining the words "Century" and "Surety." Century's good faith adoption of the Marks is also shown by a trademark clearance search it conducted to determine the availability of registering the marks "Century Surety Group" and "Century Insurance Group." See Dkt. 86, Exh. 2 at 16869; Dkt. 124 ¶195 at 23. C21's unfounded speculation that Century adopted its Marks in bad faith simply because Century "did not choose to expand its services and territory until after Century 21 was a well known mark" (Dkt. 95 at 16), is completely unsupported. See Dkt. 124 ¶26 at 31. This factor favors Century.
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6.

There is No Mental Association Between the Marks

In the context of dilution, it is important to emphasize that C21 seeks to enjoin Century from using marks beginning with the word Century even though the mark "Century 21"contains the word Century and the numeral "21." (Dkt. 124 ¶¶ 20,109-110,141 at 9,14,16,58-59.) Therefore, the main problem with C21's dilution theory is that it has never registered the term "Century" alone, does not use or advertise the word "Century" alone, prohibits Franchisees from abbreviating or shortening the name "Century C21" to "Century," and has not produced any survey information to demonstrate that consumers recognize or associate the term "Century" (in isolation) with the mark "Century 21." See Dkt. 124, ¶¶10812 at 14,58-59. Moreover, there is no dispute that the word "Century" is extensively employed in both the real estate and insurance industries and therefore is clearly not distinctive. See Dkt. 124, ¶¶148-150 at 64-69; Dkt. 126, Ex. 60 at ¶2 and Ex. 61 at ¶¶2,10 (at least 44 insurance businesses use the term "Century" to promote sales of insurance and at least 126 real estate businesses use the term "Century" to promote sales of real estate).9 Because C21 has made a concerted effort to ensure that its Marks contain two terms ­ both "Century" and "21" ­ there is no factual basis from which a reasonable jury could find that consumers mentally associate the lone word "Century" with the C21 Marks. The lack of evidence regarding "mental association"is further shown by undisputed evidence that, during the parties' 15 years of (undisputed) co-existence, none of C21's 4,500 Franchisees (who employ a total of over 120,000 agents) have ever mentioned Century to C21 despite their duty to report infringing uses of the C21 Marks. See Dkt. 124, ¶¶165, 177-179, 181, 183-87 at 20-22. It is also undisputed that C21 itself only became aware of Century's existence when Century's registration applications were published for opposition by the USPTO (id. ¶120 at 14). See Accuride Int'l, 871 F.2d a